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Wednesday, 25 May 2011

The question whether the right to control Olympic-related advertising trumps the right to sell things that look, sound and act like trade marks but aren't [see yesterday's post here] has caused the IPKat to do a little gentle scratching. On 6 July 2005 the bid by London to host the 2012 Olympics was successful, the city scraping ahead of Paris by just four votes. Just eight days later the British Olympic Association filed a UK trade mark application in all 45 Classes for the word LOCOG (the acronym of the London Organizing Committee for the Olympic Games). The mark was registered in 12 May 2006, so rather more than five years has elapsed and it is disappointingly apparent to this Kat that the mark has not been used for all the goods and services within its ample specification [Not that it matters, the Trade Marks Act 1994, s.46 (1), provides that

"The registration of a trade mark may be revoked on any of the following grounds-
(a) that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use;]

Among other things, the word LOCOG has been registered for:

"Class 05: nutritional healthfood supplements; vitamin and mineral preparations; vitamins; minerals [Illegal performance-enhancing drugs? Says Merpel, there's a good market for them and the Olympic Games are traditionally associated with their use].

Class 11: torches [ ... but the Olympic one has become the centre of a bit of a controversy of late];

Class 12: apparatus for locomotion by land; land vehicles; apparatus for locomotion by air; apparatus for locomotion by water [just wondering whether LOCOG might be a little descriptive for cogs used in locomotion ...].

Class 14: sundials [For London in the summer? A little optimistic];

Class 16: typewriters [what are the odds against LOCOG for typewriters ever being the subject of an infringement action?];

Class 18: whips [Witty comments in poor taste made by Merpel, deleted by the IPKat];

Class 25: babies napkins made of textile material [Oh for a US style 'intent-to-use' doctrine!];

This is a pretty common practice for major events, because the organisers generally want to control the authorised use of the trade mark. LOCOG itself may not sell tanning lotion (for example), but there is no reason why a sponsor cannot be 'the official supplier of tanning lotion to the London Olympics'. The registration protects the sponsors/licensees as well as LOCOG, by helping to ensure the exclusivity that they are paying for. As IP professionals, should we not be supporting, rather than criticising, this sensible IP strategy?

Protecting Olympic signs by a conventional trade mark registration seems like a pretty unsophisticated approach, with the potential vulnerability to removal being only one of the problems. Trade mark law was not really designed for this purpose. In Australia, Olympic signs are protected by specific legislation (the Olympic Insignia Protection Act 1987). Registration of signs that are protected under this Act is prohibited by general provisions in the Trade Marks Act to prevent acceptance of applications including signs the use of which would be contrary to law.

However, if you are truly offended by the LOCOG trade mark remaining on the UK register, you could always try to make an example of LOCOG by seeking revocation of the registration in respect of those goods/services in respect of which it has not been used, and there is no reasonable prospect of it being used.

The procedure seems to be quite straightforward (similar to Australia, I note), and the Official Fee is only GBP200. However, it looks like you could be up for a few thousand pounds in costs if you do not succeed. (See http://www.ipo.gov.uk/revokingnonuse.pdf)

LOCOG can defend a non-use action either by showing use, or by providing good reasons why the mark has not yet been used.

For goods/services that have a reasonable nexus with LOCOG's activities, I would have thought that the fact that the games do not actually take place until 2012 would be a fair excuse for not having commenced use as yet. A genuine intention to license the use of the trade mark to other parties would probably suffice as a defence to revocation in these circumstances.

The UK Trade Marks Act may not have taken into account the fact that winning Olympic bids are announced more than five years before the actual event. But it does allow for cases generally in which there are genuine circumstances causing a longer delay in commencement of use.

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